Preamble
Implementation
Policy and Guidelines on
Intellectual Property
1.0 Interpretation and Basic Terminology
2.0
Awareness
3.0 Ownership
4.0 Risk
5.0 Policy on Income from
Intellectual Property
6.0 Protecting Intellectual Property
7.0
Naming of Inventors/Interest Parties
8.0 Downloading works from the
internet, photocopying and other unauthorised use
9.0 Administration
10.0 Breach of this Policy
Schedule 1: Confidential Information
Schedule 2: Laboratory Book Maintenance Policy
Schedule 3: Alfred
Health Intellectual Property Committee
Preamble
Alfred Health comprises The Alfred Hospital, Caulfield Hospital and Sandringham Hospital.
The Alfred is one of Victoria’s most reputable teaching hospitals. It also has a
number of key research linkages, particularly with Monash University, Baker IDI Heart
and Diabetes Institute and the Burnet Institute. A key tenet of The Alfred’s research
mission is to ensure that its research excellence is manifested in better healthcare
outcomes, as well as as well as generating revenue for Alfred Health and its staff
to continue its cycle of appropriate investment in key research areas. While less
developed than at The Alfred, research and development activities at Caulfield and
Sandringham Hospitals are strongly encouraged.
To ensure that this vision can be met and enhanced, it is imperative that the
“intellectual property” of Alfred Health is captured and utilised for the benefit
of Alfred Health and its staff, the latter being the ultimate creators of this
intellectual property.
With the formation of the Alfred Medical Research and Education Precinct
(AMREP) and Alfred Health’s desire to ensure appropriate management and
commercialisation of its Intellectual Property, it has developed this policy
and management guidelines for Intellectual Property created by Alfred Health
Staff.
It is similarly important for entrepreneurial research activity to be
encouraged across Alfred Health’s sites, within the bounds of appropriate
corporate governance.
Implementation
- This policy relates to all Alfred Health Staff as defined in the policy.
- This policy is overseen by the Alfred Health Intellectual Property Committee.
- This policy will be brought to the attention of all existing Alfred Health Staff.
Any new Alfred Health Staff will be advised of this policy prior to commencement
of their employment (or other association with Alfred Health).
This policy is to be applied whenever Alfred Health Staff develop Intellectual
Property in the course of their employment (or other association with Alfred Health)
or Intellectual Property is or could be developed under a contract to which Alfred
Health is a party. It does not apply to Intellectual Property already owned by
Alfred Health Staff prior to their appointment to Alfred Health.
Alfred Health Policy and Guidelines on Intellectual Property
Purpose of Document
This document explains Intellectual Property, how it may advantage Alfred
Health Staff and their departments and their obligations to Alfred Health.
Alfred Health recognises the value of the research conducted on its premises,
or by staff, students, visiting scientists and visiting medical officers
using its facilities or services. It also recognises that Alfred Health
Staff not engaged in research may develop Intellectual Property in the
course of their employment or through their association with Alfred Health.
1.0 Interpretation and Basic Terminology
"Alfred Health" means the legal
entity of which The Alfred, Caulfield Hospital and Sandringham Hospital are a part.
"Alfred Health Intellectual Property
Committee" means the committee established by Alfred Health for
administration and commercialisation of Intellectual Property.
"Alfred Health staff" means an
individual who is:
- employed directly by Alfred Health;
- indirectly employed through Alfred Health such as through grant funds
administered by Alfred Health;
- a Joint Alfred Health Employee;
- an Alfred Health Student; or
- a Visiting Employee.
"Alfred Health Student" means a student who
uses the facilities of Alfred Health as part of the student’s undergraduate,
postgraduate or research activities.
"Confidential Information" means the
Confidential Information referred to in Schedule 1.
"Innovation" means any process, invention,
design, artistic or literary work (or other copyright work), information,
know-how, reagents or the like with potential commercial application.
"Intellectual Property" refers to all kinds
of Intellectual Property including but not limited to patents and
applications, know-how, confidential information and trade secrets,
computer programs or graphics, source codes or the like, registered
designs, copyright, circuit layout rights, trademarks, and applications
for registration of trademarks and any contractual rights which may
exist in relation to any innovation or work.
"IP Contracts" refers to any contract
written or oral proposed to be entered by Alfred Health where future
or existing Intellectual Property rights of Alfred Health are proposed
to be transferred or licensed to or encumbered by any third party.
"Joint Alfred Health Employee" means
a person who is jointly appointed by Alfred Health and one or more other employers.
"Visiting Employee" means
a person who is approved to use the facilities of Alfred Health for a clinical purpose, observation or research.
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2.0 Awareness
2.1 It is important that all Alfred Health Staff have an understanding of
Intellectual Property. This includes not just researchers but Alfred Health
Staff who administer any matters related to Intellectual Property or create
Intellectual Property.
2.2 It is the policy of Alfred Health that all Alfred Health Staff,
Alfred Health students and other visitors who may in some way be connected with research,
development or administration of Intellectual Property rights, should have a sound understanding
of how Intellectual Property rights may be created.
2.2.1 When Alfred Health Staff become aware that Intellectual
Property has been created they should follow an agreed procedure to ensure the Intellectual Property
is protected. They must avoid acts or omissions which could jeopardise the ownership or protection
of Intellectual Property rights.
2.2.2 The procedure to be followed when Intellectual property is created is as follows:
- With laboratory research, laboratory notebooks are to record the Intellectual Property created.
Alfred Health Staff must retain them and store them in a safe place and comply with the requirements for
laboratory books set out in Schedule 2.
- Alfred Health’s copyright should be noted on any literary work prior to its publication.
- Prior to a registrable trade mark being used in the public domain, a trade mark search should be
undertaken to avoid any possible infringement and if clear, a registration application should be considered.
- The Alfred Health Staff member involved in the creation of the Intellectual Property should notify
the Alfred Health Intellectual Property Committee if the Intellectual Property is or could be capable of
commercialisation. The secretary of the Committee is the general manager of the Alfred Health Research Office.
The Alfred Health Staff member may be required to assist the Committee with technical advice. The Committee will
decide if the Intellectual Property is capable of commercialisation and notify the Alfred Health Staff member
accordingly.
2.3 Upon commencing employment at Alfred Health (or other association with Alfred Health),
all Alfred Health Staff must be advised of this policy. Any person who is not an employee of Alfred Health
should be required to assign any Intellectual Property rights to Alfred Health at the time of commencement.
2.4 Where an Alfred Health Staff member is a Joint Alfred Health Employee, Visiting
Employee or Alfred Health Student, or where the research or activity is a collaborative venture with
another organisation which may or may not be providing funding, the contract governing the venture
must clearly specify pre-existing Intellectual Property and how the ownership of Intellectual
Property developed from the research or activity is to be treated. Examples would be clinical
trials or other research involving joint Alfred Health Staff and University staff and
collaborative research projects between Alfred Health Staff and organisations which supply
research funding.
3.0 Ownership
3.1 Where Intellectual Property is created during the course of an Alfred Health Staff
member’s employment or as a result of use of resources, facilities or funds provided by Alfred Health,
then in the absence of any agreement in writing to the contrary, those Intellectual Property rights
belong to and are owned by Alfred Health. This applies wherever the work is performed and includes
Intellectual Property developed from work performed by an Alfred Health Staff member out of working
hours and at home or at non-Alfred Health premises.
3.2 With the exception of any agreement entered into as per Clause 2.4 by Alfred
Health with the third party with whom a Alfred Health Staff member has an affiliation (as in the
case of a Joint Alfred Health employee, Visiting Employee or Alfred Health Student), all of the
Intellectual Property generated by Alfred Health Staff during the course of their employment or
other association with Alfred Health will belong to Alfred Health. All Alfred Health Staff and
any other persons considered relevant by the Alfred Health Intellectual Property Committee
shall be required to execute, as a condition of employment, secondment, attendance or use of
Alfred Health facilities or funds, an appropriate agreement to the effect that all Intellectual
Property rights developed in the course of that association are to be owned by Alfred Health.
Alfred Health may also require Alfred Health Staff to confirm Alfred Health’s ownership of any
Intellectual Property that was created by them during the course of their employment by or
other association with Alfred Health.
3.3 It is Alfred Health’s sole province to deal with Intellectual Property rights.
Any application for patents or other protection and the entering into and negotiation of Intellectual
Property contracts will be undertaken by the Alfred Health Intellectual Property Committee at its
discretion, but in consultation with the relevant Alfred Health Staff.
Without the written consent of the Alfred Health Chief Executive, acting on the advice of
the Alfred Health Intellectual Property Committee, there should be no discussion of Innovations
with third parties.
3.4 If the Alfred Health Intellectual Property Committee decides on behalf of
Alfred Health that it does not wish to provide funds for the protection and/or commercialisation
of Intellectual Property it shall, if requested by the Alfred Health Staff member who invented
the Intellectual Property, provide, for a forty-five (45) day period, a first right to negotiate
the terms under which Alfred Health will assign this Intellectual Property to the Alfred Health
Staff member, taking into account all costs incurred by Alfred Health in developing, protecting
and commercialising the Intellectual Property to the date of the assignment, and subject to
these costs and any taxes and other expenses relating to the assignment being met by the
Alfred Health Staff member.
If no patents have been filed and no other costs incurred, in respect of such Intellectual
Property when the Alfred Health Intellectual Property Committee decides not to proceed,
such assignment shall be free of charge to the inventor.
However, if Alfred Health has incurred costs in developing, protecting and commercialising
the Intellectual Property to the date of the assignment or costs associated with the assignment
which the inventor is unable to repay to Alfred Health, the assignment may include provisions
for Alfred Health to receive a proportion of any income or consideration generated by the
commercialisation of the Intellectual Property.
If the Intellectual Property rights are assigned, conditions of the assignment will be subject
to an ongoing right for Alfred Health to use the Innovation in-house at no cost to Alfred Health.
In addition, the Alfred Health Staff member will provide the Alfred Health Intellectual Property
Committee with a report on a six monthly basis of the status of the Intellectual Property. In
the event of the Alfred Health Staff member indicating in such a report, that he/she is not
proceeding with protection or commercialisation of the Intellectual Property, the Alfred Health
Staff member and the Intellectual Property Committee must meet as soon as possible to negotiate
a reassignment of the Intellectual Property rights.
3.5 Where a work to which this policy applies is created solely for the purpose of
publication in a professional or learned journal, or by form of a text book or other academic
publication and the publisher requires, as a condition of publication, that the author assigns
copyright in the work to it, Alfred Health must assign copyright in the work to the person who
created that literary work, or to the publisher, as required to facilitate the assignment.
3.6 Any assignment of copyright under the preceding paragraph must be on condition that:
a) Alfred Health has an automatic, non-exclusive, royalty-free and
irrevocable licence to reproduce, publish, disseminate or otherwise use the work for Alfred
Health’s own purposes; and
b) Alfred Health has the right to recover from the publisher any costs incurred
by Alfred Health in providing funding, salary, resources, facilities, apparatus or supervision
for the creation of the literary work.
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4.0 Risk
4.1 Development and protection of Intellectual Property involves an element of risk.
The cost of obtaining legal advice, searches and advice from patent attorneys, as well as patent
application fees themselves, must be considered. This consideration will be the province of the
Alfred Health Intellectual Property Committee according to the terms of delegations to it by the Board.
4.2 Alfred Health reserves its rights to determine whether particular Intellectual
Property should be pursued and developed and whether protection such as patents should be obtained.
Alfred Health may at any time seek external advice concerning any of these matters.
5.0 Policy on Income from Intellectual Property
5.1 Where Alfred Health successfully commercialises Intellectual Property, income or
other consideration will be derived. Alfred Health will incur costs during the process of such
commercialisation. Any income or consideration to be shared by Alfred Health will be based on
net income derived from the Intellectual Property.
Income derived from the commercialisation of Intellectual Property will be distributed net of the following costs:
5.1.1 Costs associated with the commercialisation and protection of the Innovation or the Intellectual
Property, which costs shall include, but not be limited to:
(a) all costs of protecting the Intellectual Property,
including all legal costs, costs of obtaining or applying for a patent,
registered design or any other form of Intellectual Property protection;
costs of enforcing or defending any patent, copyright, registered design
or any other form of Intellectual Property;
(b) legal costs of entering into any Intellectual Property contract or other commercial agreement
and/or advising on any matter concerning the Intellectual Property;
(c) any tax, duty, excise or impost, application or registration fee including stamp duty on
any agreement which may be payable by Alfred Health in relation to commercialising the research and/or any tax
on income derived from the Intellectual Property; and
(d) research-related costs borne by Alfred Health.
5.1.2 The balance of the income or consideration remaining after the payment of the
amounts referred to under 5.1.1 above shall be disbursed as follows:
(a) one-half to the relevant Alfred Health Staff;
(b) one-quarter to the Department(s) within Alfred Health in which the relevant Alfred Health
Staff were employed at the time of making the invention;
(c) one-quarter to Alfred Health.
5.2 If there is more than one Alfred Health Staff member involved in the creation
of such Intellectual Property, the 50 per cent of proceeds shall be divided amongst Alfred Health Staff named
as inventors in accordance with the independent patent attorney’s report described in clause 7.
5.3 It is also recognised that Intellectual Property may be commercialised through “start-up”
companies. In such cases Alfred Health Staff may, with the approval of the Alfred Health Intellectual Property
Committee, own equity in such start-up companies in addition to their entitlements under this section. Their
equity entitlements and those of Alfred Health will be in the same proportion as set out in clause 5.1.2.
6.0 Protecting Intellectual Property
6.1 Alfred Health Staff must comply with any guidelines issued by the Alfred Health Intellectual
Property Committee, to ensure that Intellectual Property rights are protected.
6.2 Alfred Health understands the desire and the need within the medical and scientific
communities to publish findings and results and to discuss matters with colleagues in the interests of
medical advancement. However, it recognises that it can be extremely easy to lose the ability to obtain
patent or other Intellectual Property protection. This may occur with the premature publication,
public announcement or report in the media, seminar, conference or other communication. It may also
be lost by approaching commercial interests too early. It is important that Alfred Health Staff
adopt a prudent approach to disclosure of Intellectual Property, especially where there is a
prospect of commercialisation and thus a commercial return.
6.3 If an Alfred Health Staff member considers that Intellectual Property developed
in the course of his/her employment (or other association with Alfred Health) could be commercialised,
he/she should contact the Alfred Health Legal Counsel to seek advice. This should be done before
publication or other disclosure of the Intellectual Property.
6.4 It is important that Alfred Health Staff protect Alfred Health’s Intellectual
Property against unauthorised use. As part of such protection it is necessary to ensure that the
Intellectual Property rights claimed are valid and/or have priority over any competing claims.
Alfred Health Staff must ensure that the research data they generate is recorded in accordance
with appropriate scientific procedures and format to enable it to be entered into evidence
and thus protected at the necessary time. Alfred Health Staff must follow the guidelines for
the keeping and maintenance of research data and records published from time to time on
behalf of the Alfred Health Intellectual Property Committee. The current guidelines
are attached as Schedule 2 to this document.
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7.0 Naming of Inventors
Alfred Health Staff involved in the development of Intellectual Property in the course of
their employment or association with Alfred Health and which has the potential for commercialisation
are expected to agree between themselves on the degree of inventorship if each person involved.
Where they cannot agree, the Secretary of the Alfred Health Intellectual Property Committee shall
refer the matter to an independent patent attorney who shall make appropriate enquiries,
including, if necessary, interviewing the relevant Alfred Health Staff to give them an opportunity
to put their case for inventorship. The patent attorney will examine their claims and within
thirty (30) days of the referral shall issue a formal opinion outlining the inventors to be
named and if justified in his/her opinion the contribution of each inventor to the invention.
Such opinion shall be binding on Alfred Health and Alfred Health Staff. The costs of obtaining
such opinion shall be borne by the Alfred Health Intellectual Property Committee.
8.0 Downloading works from the internet, photocopying and other
unauthorised use
Alfred Health Staff must not engage in unauthorised use of copyright works
including works from
the internet. Alfred Health Staff must comply with relevant policies and guidelines published on
the intranet to ensure there is no infringement. Alfred Health Legal Counsel
Bill O'Shea(ext 63750), together
with the Visual Communications Department (ext 62331), the AMREP library (ext 63003) and the
Caulfield Hospital library (ext 66832) can also assist. The same procedure should be followed
when third party copyright works are to be photocopied for use.
9.0 Administration
Alfred Health maintains the Alfred Health Intellectual Property Committee to advise Alfred
Health’s Chief Executive on all matters related to Intellectual Property and implement and
administer Alfred Health’s policies and procedures related to it. Schedule 3 sets out the
Terms of Reference for the Intellectual Property Committee.
10.0 Breach of this Policy
10.1 Any breach of any provision of this policy by any Alfred Health Staff
is to be brought to the attention of the Alfred Health Intellectual Property Committee.
10.2 The Alfred Health Intellectual Property Committee may, at its discretion,
inform itself of the circumstances of the breach.
10.3 The Alfred Health Intellectual Property Committee may, at its discretion,
recommend that Alfred Health invoke disciplinary proceedings against the Alfred Health
Staff member in relation to the breach.
REFERENCES
Charter of Human Rights and Responsibilities Act 2006 (Vic)1
1REMINDER: Charter of Human Rights and Responsibilities Act 2006 – All those
involved in decisions based on this policy have an obligation to ensure that
all decisions and actions are compatible with relevant human rights.
Schedule 1: Confidential Information
Preamble
Commonwealth legislation provides that all Intellectual Property created by employees in
the course of their employment is owned by their employer unless there is a written agreement
to the contrary. To ensure that the commercial value of Alfred Health’s Intellectual Property
is not lost, all Alfred Health Staff members must be aware of their obligations in relation
to Confidential Information and not do or fail to do anything which could result in a loss
of Alfred Health’s Intellectual Property. The same obligation extends to Alfred Health’s
confidential information.
During the course of their employment by Alfred Health, Alfred Health Staff may make,
create or have access to confidential information or data which has commercial potential
including but not limited to data within laboratory note books, samples, reagents, reports
and the like (“Confidential Information”). Alfred Health requires Alfred Health Staff to
take whatever steps are reasonable to protect it from disclosure. It is a reasonable
condition of their employment by Alfred Health that Alfred Health Staff keep the Confidential
Information confidential in accordance with the following terms and conditions.
Terms and Conditions
1. Obligations of Confidentiality
1.1 Alfred Health Staff must maintain the confidentiality of the
Confidential Information and use the Confidential Information only for the
purposes of their continuing employment (or other association with Alfred Health).
1.2 Alfred Health Staff:
(a) must not disclose the Confidential Information to any
person to make use of or take advantage of the Confidential Information
for any purpose other than as specifically permitted by this Policy;
(b) must take all steps necessary to ensure that the Confidential
Information is kept confidential;
(c) must not copy the Confidential Information or permit the copying
of the Confidential Information in any form other than as permitted by this Policy;
(d) upon request must return the Confidential Information to Alfred Health
together with any copies of the Confidential Information;
(e) must not make use of the Confidential Information in any manner so
as to obtain any benefit, right or privilege for him/herself or for any other
person that would not have been available but for having access to the
Confidential Information; and
(f) must not publish or otherwise disclose Confidential Information,
including data, without the express consent of Alfred Health.
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2. Permitted disclosure
2.1 Subject to clause 2.2, Alfred
Health Staff may disclose the Confidential Information to any officer, employee
or agent of Alfred Health who has a specific need for access to the Confidential Information.
2.2 If permitted by the Chief Executive of Alfred Health or his/her delegate,
an Alfred Health Staff member may copy the Confidential Information, but must:
(a) keep a record of all copies and make that record available on request;
(b) take all precautions to ensure that the copies are protected from
unauthorised access or damage; and
(c) ensure that the copies are returned or, in the case of copies stored or
reproduced other than in a physical form, expunged at the earlier of:
(i) a request being made by Alfred Health; or
(ii) upon completion of the confidentiality period described in any agreement
governing the Confidential information.
2.3 Obligations of confidentiality do not extend to information that:
(a) is public knowledge, other than as a result of a breach of this Policy;
(b) is already known to the time of disclosure (including trade secrets
and inventions not disclosed in existing patent applications);
(c) is obtained by the Alfred Health Staff member from a third party who
is not an Alfred Health Staff member and who has a lawful right to disclose it;
(d) the Alfred Health Staff member is required by law to disclose; or
(e) is being or later is independently developed by the Alfred Health
Staff member without use of or resort to the Confidential Information and this can be
proven by written records.
3. Term
Alfred Health Staff remain bound by the terms and conditions of this policy for a
period of three years after ceasing employment (or other association with Alfred Health).
Schedule 2: Laboratory Book Maintenance Policy
The following are requirements for Alfred Health Staff and Alfred Health Students in
relation to laboratory book maintenance:
- Commence a new experiment on a new page.
- Record the experiment title and date.
- Use black or blue biro only.
- Do not erase or use correction fluid – line out mistakes with a single line and initial and date new entry.
- Do not leave blank spaces; draw a line through such spaces.
- Sign and date each page.
- Have all pages witnessed regularly (at least once a week) by a non-supervisory colleague.
- Record all results and observations. (Any additional raw data in hard copy form can be
adhered in the notebook with permanent pH neutral archival glue).
- Material that is added must be signed across the edge of the insertion.
- Material that is added must be witnessed.
Schedule 3: Alfred Health Intellectual Property Committee
Purpose and function
The Alfred Health Intellectual Property Committee will advise the Alfred Health Chief
Executive on all matters related to Intellectual Property and implement and administer
Alfred Health’s policies and procedures related to it.
The Alfred Health Intellectual Property Committee will oversee the work of the Research
Office in all discussion and negotiation between Alfred Health Staff and other relevant
persons and Alfred Health, regarding Intellectual Property unless the Chief Executive or
Board determines otherwise. The Alfred Health Intellectual Property Committee will be
responsible for developing the initial processes and maintenance of appropriate mechanisms
for establishing and implementing this policy.
The composition and terms of reference of the Committee will be reviewed annually and
amendments recommended to the Board.
Terms of Reference
On behalf of the Board of Directors of Alfred Health:
- To oversee and periodically review the Alfred Health Intellectual Property Policy
and its implementation;
- To advise the Chief Executive on all matters pertaining to the management of the
Intellectual Property of Alfred Health including, but not limited to its identification,
protection and commercialisation;
- To direct education programs to disseminate information about Intellectual Property
and its protection, throughout the organisation;
- To oversee interaction between Alfred Health Staff and commercial organisations,
patent attorneys and legal advisers, regarding Intellectual Property;
- To ensure the appropriate negotiation of all Intellectual Property contracts,
through the Committee Secretary and/or other appropriate Committee members;
Reporting
The Committee will report to the Alfred Health Board annually or as required, via the Chief Executive.
Meetings
The Committee will meet as required and may invite any number of non-members to attend.
External assistance
The Committee may within its delegated authority and at the expense of Alfred Health, seek independent
external advice on any matter placed before it.